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1860.01 < International Preliminary Examination >Procedure for Applications Having an International Filing Date Before January 1, 2004< [R-2] - 1800 Patent Cooperation Treaty
1860.01 < International Preliminary Examination >Procedure for Applications Having an International Filing Date Before January 1, 2004< [R-2]
>[Note: For the international preliminary examination procedure applicable to international applications having an international filing date on or after January 1, 2004, see MPEP § 1860.]<
EXAMINATION PROCEDURE
The International Preliminary Examination is to be carried out in accordance with PCT Article 34 and PCT Rule 66. After the Demand is checked for compliance with PCT Rules 53 - 55, 57 and 58, the first step of the examiner is to study the description, the drawings (if any), and the claims of the international application and the documents describing the prior art as cited in the international search report.
A written opinion must be prepared if the examiner:
(A) Considers that the international application has any of the defects described in PCT Article 34(4) concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
(B) Considers that the report should be negative with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4);
(C) Notices any defects in the form or contents of the international application;
(D) Considers that any amendment goes beyond the disclosure in the international application as originally filed;
(E) Wishes to make an observation on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description ( PCT Rule 66.2);
(F) Decides not to carry out the international preliminary examination on a claim for which no international search report was issued; or
(G) Considers that no acceptable amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.
The written opinion is prepared on form PCT/IPEA/408 to notify applicant of the defects found in the international application. The examiner is further required to fully state the reasons for his/her opinion ( PCT Rule 66.2(b)) and invite a written reply, with amendments where appropriate ( PCT Rule 66.2(c)), normally setting a 2 month time limit for the reply.
The applicant may reply to the invitation by making amendments or, if applicant disagrees with the opinion of the examiner, by submitting arguments, as the case may be, or both.
The U.S. Rules of Practice pertaining to international preliminary examination of international applications permit a second written opinion in those cases where sufficient time is available. Normally only one written opinion will be issued. Any reply received after the expiration of the set time limit will not normally be considered in preparing the international preliminary examination report. In situations, however, where the examiner has requested an amendment or where a later amendment places the application in better condition for examination, the amendment may be considered by the examiner.
If the applicant does not reply to the written opinion within the set time period, the international preliminary examination report will be prepared after expiration of the time limit plus sufficient time to have any reply clear the Mail Center.
If, after initial examination of the international application, there is no negative statement or comment to be made, then only the international preliminary examination report will issue without a written opinion having been issued.
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